Columbus, Ohio Businesses Use Cohn Legal for Trademark Services
Serving clients in Columbus, Ohio, Cohn Legal, PLLC is a boutique law firm that focuses on providing excellence in intellectual property protection startups and entrepreneurs. On the most fundamental level, our goal is to provide our clients with exceptional legal guidance and support at cost-effective rates. While excellence in legal representation is a given, we take greater pride in our ability to forge lasting bonds with our clients.
Top Questions Columbus, Ohio Businesses Have About Obtaining a Trademark
If I only provide my services in Columbus, Ohio, can I still obtain a Federal Trademark?
This is an excellent question. Ultimately, to obtain a federal trademark, it must be used in “interstate-commerce” meaning that your services must be provided in at least two States. If you are presently only providing your services in Columbus, Ohio, we can simply file an Intent to Use application; The intent-to-use application allows the applicant to reserve the right to use the trademark once it is ready to be used in inter-state-commerce.
What is a trademark and why is it important to register it?
A trademark is a distinctive symbol, word, phrase, design, or a combination thereof that identifies and distinguishes the source of goods or services of one party from those of others. It serves as a valuable asset for businesses by establishing brand identity, protecting their reputation, and fostering consumer trust.
Registering a trademark provides numerous benefits and legal protections for a business. Here are some key reasons why it is important to register a trademark:
Exclusive Rights: Registering a trademark grants the owner exclusive rights to use the mark in connection with specific goods or services within the registered jurisdiction. This prevents others from using a similar mark that may cause confusion among consumers.
Brand Protection: A registered trademark acts as a shield, safeguarding your brand from potential infringement. It provides legal recourse and enables you to take action against unauthorized use or misuse of your mark, including counterfeit products or imitations.
Consumer Recognition: Trademarks help consumers identify and distinguish your products or services from competitors. By registering a trademark, you establish a unique brand identity that becomes associated with quality, reliability, and trustworthiness in the marketplace.
Market Advantage: A registered trademark provides a competitive advantage by enhancing brand recognition and recall. It allows you to differentiate yourself from competitors, attract customers, and build customer loyalty, ultimately leading to increased market share and business growth.
Asset Value: A registered trademark is a valuable intangible asset that can appreciate over time. It can be licensed, franchised, or sold, providing opportunities for additional revenue streams or business expansion.
Geographical Protection: Trademark registration provides territorial rights, allowing you to protect your brand within the registered jurisdiction. This becomes particularly important as businesses expand and operate in multiple locations or target international markets.
Legal Presumption: Registration creates a legal presumption of ownership and validity of the trademark. In case of any legal disputes, it simplifies the burden of proof and strengthens your position in asserting and enforcing your rights.
In summary, registering a trademark is crucial for businesses to establish brand identity, protect their reputation, and gain legal rights and advantages. It provides exclusivity, brand recognition, consumer trust, and a competitive edge in the marketplace, ultimately contributing to long-term success and growth.
Is there a difference between a trademark and a servicemark?
Yes, there is a difference between a trademark and a servicemark, although they both serve similar purposes in protecting intellectual property rights.
A trademark is typically associated with products or goods. It is a recognizable sign, symbol, logo, word, phrase, or design that distinguishes the source of the products from those of others in the marketplace. Trademarks are used to identify and differentiate specific products or brands, ensuring that consumers can easily recognize and associate them with a particular company or source.
On the other hand, a servicemark (sometimes spelled as “service mark”) is specifically used to identify and distinguish services provided by a business. It functions similarly to a trademark but applies to services rather than physical products. A servicemark can include names, logos, slogans, or any other distinctive elements that represent and identify a service provider.
The distinction between a trademark and a servicemark lies in the type of offering being protected. Trademarks protect products, while servicemarks protect services. However, in practice, the term “trademark” is often used more broadly to refer to both trademarks and servicemarks.
It’s important to note that the legal protection and registration processes for trademarks and servicemarks are generally the same. Both are subject to the same principles of distinctiveness, likelihood of confusion, and potential infringement.
Whether you need to register a trademark or servicemark will depend on the nature of your business and the type of offering you provide. If you offer products, you would typically seek trademark protection, while if you offer services, you would seek servicemark protection. However, in many jurisdictions, the term “trademark” is used to cover both products and services.
To ensure proper protection for your intellectual property, it is advisable to consult with a trademark attorney who can guide you through the registration process and help determine the appropriate type of protection based on your specific business and offerings.
How do I choose a strong and unique trademark?
Choosing a strong and unique trademark is a crucial step in establishing a distinctive brand identity and ensuring effective protection. Here are some guidelines to help you select a strong and unique trademark:
Distinctiveness: Aim for a trademark that is inherently distinctive and not commonly used in your industry. Avoid generic terms or descriptions that may be difficult to protect or enforce.
Uniqueness: Conduct a thorough trademark search to ensure that the mark you intend to use is not already registered or being used by another business in a similar industry. This helps you avoid potential conflicts and infringement issues.
Creativity: Be creative and innovative when developing your trademark. Consider using distinctive words, combinations, or designs that capture the essence of your brand and set it apart from competitors.
Memorability: Select a trademark that is easy to remember and pronounce. Avoid complex or confusing elements that may make it difficult for consumers to recall or communicate your brand.
Descriptive vs. Suggestive: While descriptive marks directly describe the product or service, suggestive marks evoke an idea or quality related to the offering. Suggestive marks are generally stronger and more distinctive.
Avoid Geographic Terms: Using geographic terms may limit the scope of your trademark rights. Opt for terms or elements that have broader appeal and are not tied to a specific location.
Consider Future Expansion: If you plan to expand your business into different products, services, or markets, choose a trademark that allows for flexibility and doesn’t limit your growth potential.
Trademark Attorney: Consult with a trademark attorney who can provide professional advice and assist you in conducting a comprehensive trademark search. They can offer guidance on selecting a strong and unique trademark that aligns with your business goals and legal requirements.
Remember, choosing a strong and unique trademark is vital to building a distinctive brand and ensuring effective protection. Taking the time to research, brainstorm creative options, and seek professional advice can help you make an informed decision that will benefit your business in the long run.
What’s the difference between the ® and TM symbols?
Use of the ® symbol is reserved for those pieces of intellectual property that are trademarked at the federal level.
The TM symbol can be used any time, even if you haven’t filed a trademark application yet. However, the TM symbol has very little legal significance. It just means that you consider yourself to have “common law” rights to your trademark.
Can I register a trademark for my business name or logo?
Yes, you can register a trademark for your business name or logo. Trademark registration provides legal protection and exclusive rights to use your business name or logo in connection with specific goods or services.
When considering trademark registration, you have the option to register either a wordmark (business name) or a design mark (logo). Here’s a breakdown of each:
Wordmark: A wordmark is a trademark that consists of text, such as your business name or a specific phrase associated with your brand. Registering a wordmark protects the textual elements and grants you exclusive rights to use that word or phrase in connection with your goods or services. It allows you to prevent others from using a similar name in a way that may cause confusion among consumers.
Design Mark: A design mark is a trademark that includes a logo, symbol, or design element that represents your brand. Registering a design mark provides protection for the specific visual elements of your logo. It ensures that others cannot use a similar design that may cause confusion in the marketplace. Additionally, you can include both textual and graphical elements in a single design mark registration.
It’s important to note that while registering a trademark for your business name or logo provides significant benefits and protections, it does not automatically prevent others from using similar names or logos altogether. Trademark rights are generally limited to specific goods or services, and enforcement may require monitoring and taking appropriate legal action if infringement occurs.
To strengthen your trademark registration, it is advisable to conduct a thorough search to ensure your desired business name or logo is available and does not conflict with existing trademarks. Additionally, seeking legal guidance from a trademark attorney can help navigate the registration process, ensuring compliance with the requirements and increasing the chances of a successful trademark application.
Should I register the name of my business or the logo first?
Ideally, you want to trademark both using separate trademark applications. If you have to prioritize, then trademark the name of your business in plain text first. Register the logo as soon as possible after that.
Some business owners try to save money by registering just the logo, especially if it contains the name of their business. However, we don’t recommend this because if you want to change the design of your logo, then you risk losing trademark protection for the name of your business.
Do I need to submit a specimen showing the use of my trademark in commerce?
If you’re already using your trademark in commerce, then the USPTO will want to see a specimen or sample of it. This can be a product label, a screenshot of your website, or marketing materials. If you aren’t yet using the trademark in commerce, you can file an intent-to-use application and provide a specimen at a later date, usually within 6 months.
If you aren’t using the trademark in commerce within 6 months of receiving approval from the USPTO, you can request an extension. The USPTO allows five 6-month extensions.
Can I register my trademark before my business is up and running?
You can and should register your trademark before your business opens its doors. Registering your trademark protects it from infringement. It will also ensure that the trademark you want is available to you before you spend time and money on marketing materials, product labels, store signage, product labels, etc.
Can I trademark a phrase?
Yes, it is possible to trademark a phrase under certain circumstances. To be eligible for trademark protection, a phrase must meet certain criteria. First and foremost, it should be distinctive and capable of identifying the source of goods or services. Generic or descriptive phrases that merely describe the products or services themselves are generally not eligible for trademark protection. However, if a phrase has acquired distinctiveness through extensive use and has become associated with a specific brand or company, it may be eligible for trademark registration.
When considering trademarking a phrase, it is important to conduct a thorough search to ensure that the phrase is not already in use or registered by another party in a similar field. This helps avoid potential conflicts and ensures that your mark is unique and capable of standing out in the marketplace.
It’s worth noting that trademark protection for a phrase extends to its specific use within the context of the goods or services it represents. This means that while you can trademark a particular phrase for a specific industry or product, it does not grant exclusive rights to that phrase in all contexts.
To increase the likelihood of successfully trademarking a phrase, it is recommended to consult with a trademark attorney who can guide you through the process, conduct a comprehensive search, and assist in preparing and filing the trademark application.
Can I trademark a logo?
Yes, you can trademark a logo to protect its distinctiveness and prevent others from using a similar mark. A logo can consist of various elements such as designs, symbols, images, or a combination of these elements that uniquely represent your brand or business. Like any other trademark, a logo must meet certain criteria to be eligible for protection.
To qualify for trademark registration, a logo should be distinctive and not merely descriptive or generic. It should be capable of identifying the source of goods or services and creating a connection in the minds of consumers. The more unique and creatively designed your logo is, the stronger its potential for trademark protection.
Similar to trademarking a phrase, conducting a comprehensive search is essential to ensure that your logo does not infringe upon existing trademarks in the same or related industries. This search helps identify any potential conflicts or similarities that could hinder the registration process.
Working with a trademark attorney is highly recommended when seeking to trademark a logo. They can guide you through the application process, assist in determining the distinctiveness of your logo, and ensure that the application meets all necessary requirements for successful registration.
Can I trademark a color?
Yes, it is possible to trademark a color under certain circumstances, but it is generally more challenging compared to trademarking phrases or logos. Trademark protection for a color is typically limited to specific contexts or industries where the color has acquired distinctiveness and is associated with a particular brand or product.
To successfully trademark a color, you must demonstrate that the color has acquired what is known as secondary meaning in the marketplace. This means that consumers have come to associate the color with a specific source of goods or services, rather than perceiving it as merely decorative or functional. Acquiring secondary meaning usually requires extensive and continuous use of the color in commerce, along with evidence that consumers identify the color with your brand.
It’s important to note that not all colors are eligible for trademark protection. Colors that are commonly associated with specific industries or products may face difficulties in obtaining trademark registration. Additionally, single colors are generally more challenging to protect compared to color combinations or patterns, which can have a greater likelihood of distinctiveness.
Given the complexity and challenges involved in trademarking a color, it is highly recommended to consult with a trademark attorney who specializes in this area. They can provide guidance on the viability of trademarking a particular color, help gather the necessary evidence to support distinctiveness, and assist in navigating the trademark application process.
What is the Trademark Electronic Application System?
The Trademark Electronic Application System (also known as TEAS) enables you to submit your trademark application to the USPTO and pay any associated fees online.
TEAS offers different types of application forms tailored to specific filing purposes, including:
TEAS Plus: This form provides a reduced filing fee but requires applicants to meet specific requirements, such as submitting all documents online, using pre-approved identifications of goods and services, and agreeing to electronic correspondence.
TEAS Reduced Fee: This form allows applicants to take advantage of a slightly reduced filing fee while providing more flexibility compared to TEAS Plus. It requires compliance with certain filing and document submission rules.
TEAS Regular: This form is suitable for applicants who do not meet the requirements of TEAS Plus or TEAS Reduced Fee. It offers more flexibility in terms of document submission and identifications of goods and services, but the filing fee is higher.
The TEAS system provides a user-friendly interface for completing and submitting trademark applications online. It guides applicants through the necessary steps and allows for the electronic attachment of required documents, including specimens and drawings. It also enables online payment of fees.
Using TEAS offers several advantages, such as faster processing times, immediate filing date confirmation, online access to application status and correspondence, and the ability to manage and update trademark information throughout the registration process.
Overall, the Trademark Electronic Application System (TEAS) simplifies the process of applying for trademark registration, streamlining administrative tasks, and providing a convenient online platform for managing trademark applications with the USPTO.
How long does the trademark registration process take?
The duration of the trademark registration process can vary depending on several factors. While it is challenging to provide an exact timeframe, here’s the general timeline and key stages involved:
Application Filing: The first step is to submit your trademark application to the appropriate trademark office, such as the United States Patent and Trademark Office (USPTO) in the United States. The initial filing typically takes a few hours to complete.
Initial Review: After filing, the trademark office conducts an initial review of your application. This process aims to ensure that all necessary information and fees have been provided. The duration of the initial review stage can range from a few weeks to a few months, depending on the workload of the trademark office.
Examination and Publication: Once the initial review is complete, the trademark office examines your application in detail. This involves assessing the distinctiveness of your mark, conducting a search for conflicting marks, and evaluating the compliance of your application with trademark laws and regulations. The examination process can take several months to a year, depending on the complexity of the application and the backlog of the trademark office. After examination, if no issues arise, your mark may be published for opposition.
Opposition Period: During the opposition period, which typically lasts 30 days or longer, third parties who believe they may be harmed by the registration of your mark can oppose the registration. If an opposition is filed, it can prolong the registration process by several months or even years, depending on the complexity of the opposition proceedings.
Registration or Refusal: If no opposition is filed, or if an opposition is unsuccessful, the trademark office will finalize the registration process. You will receive a certificate of registration, granting you legal rights and protection for your trademark. The entire process, from application filing to registration, can take anywhere from several months to a few years.
It’s important to note that the timeframe provided here is a general estimate and can vary based on various factors, including the jurisdiction, the complexity of the application, and any potential opposition or objections. To have a better understanding of the expected timeline for your specific case, it is advisable to consult with a trademark attorney or refer to the relevant trademark office’s guidelines and processing times.
Can I request an expedited approval of my trademark registration?
Yes, it is possible to request an expedited approval of your trademark registration under certain circumstances. The United States Patent and Trademark Office (USPTO) provides an option for expedited processing called the “TEAS Plus” and “TEAS RF” programs, which allow applicants to potentially receive a faster review of their trademark application.
TEAS Plus: If you meet the requirements of the TEAS Plus program, you can request expedited processing. To qualify, you must submit your application online using the Trademark Electronic Application System (TEAS) and meet specific criteria, such as providing accurate information, using pre-approved identification of goods or services, and agreeing to electronic communication with the USPTO. By adhering to these requirements, your application can be processed more quickly.
TEAS RF: The TEAS Reduced Fee (RF) program also offers expedited processing. It allows applicants to receive faster consideration of their trademark application by paying an additional fee. This option is available for both initial applications and responses to office actions. By selecting the TEAS RF option and paying the appropriate fee, you can expedite the review process.
It’s important to note that even with an expedited request, the overall processing time for a trademark registration can still vary. While the expedited processing can accelerate the initial review, the entire process is subject to the workload and priorities of the USPTO.
To determine if expedited processing is suitable for your situation, it is advisable to consult with a trademark attorney. They can assess your specific circumstances and guide you through the application process, including determining the best strategy to expedite the approval of your trademark registration.
Keep in mind that expedited processing does not guarantee immediate approval. It simply aims to speed up the initial review and examination process. Therefore, it’s important to ensure that your trademark application is accurate, complete, and complies with all legal requirements to maximize your chances of a successful and timely registration.
How much does it cost to register a trademark?
The cost of registering a trademark can vary depending on several factors, including the jurisdiction, the type of trademark, the number of classes of goods or services, and whether you engage the services of a trademark attorney. While I cannot provide specific amounts due to the variability, I can outline the general cost considerations involved:
Government Fees: Most trademark offices require payment of government fees to process your trademark application. These fees can vary significantly depending on the jurisdiction and the number of classes of goods or services you wish to register under. It’s important to consult the specific trademark office’s fee schedule to determine the applicable costs.
Attorney Fees: While it is not mandatory to hire a trademark attorney, many businesses choose to seek professional assistance to navigate the complexities of the trademark registration process. The fees charged by trademark attorneys vary based on factors such as their experience, reputation, and the scope of services provided. Engaging a trademark attorney can help ensure a smoother process and increase the likelihood of a successful registration.
Trademark Search: Before filing a trademark application, it is advisable to conduct a comprehensive trademark search to assess the availability and potential conflicts with existing marks. While you can perform a basic search on your own, hiring a professional trademark search company or attorney to conduct a thorough search can provide more reliable results. The cost of a trademark search can range from a few hundred to several thousand dollars, depending on the extent and complexity of the search.
Additional Services: Depending on your specific needs, there may be additional costs involved, such as responding to office actions or filing appeals if your application encounters objections or opposition. These costs can vary depending on the complexity of the issues and the amount of work required.
It is important to budget for these costs when considering trademark registration. To get a more accurate estimate of the costs associated with registering a trademark for your specific situation, it is recommended to consult with a trademark attorney or review the fee schedules provided by the relevant trademark office. They can provide guidance tailored to your requirements and help you understand the expected expenses involved.
Does my business need more than one trademark?
Whether your business needs more than one trademark depends on various factors, including the nature of your business, the products or services you offer, and your branding strategy. While there is no definitive answer applicable to all businesses, here are some considerations to help you determine if multiple trademarks are necessary:
Distinct Product Lines or Services: If your business operates in different product categories or offers a diverse range of services, it may be beneficial to consider separate trademarks for each line. This allows for clearer identification and differentiation of your offerings in the market.
Geographic Expansion: If you plan to expand your business into different regions or countries, it may be prudent to consider registering separate trademarks in each jurisdiction. This helps protect your brand and prevents potential conflicts with existing trademarks in those regions.
Brand Extensions: If your business intends to introduce new products or services that are distinct from your existing offerings but still related to your brand, it might be advisable to secure additional trademarks. This ensures that your new ventures are adequately protected and can be recognized independently.
Subsidiaries or Sub-Brands: If your business has subsidiaries or operates under multiple sub-brands, it may be advantageous to register separate trademarks for each entity or sub-brand. This provides individual legal protection and allows for brand management specific to each entity.
Licensing and Franchising: If your business engages in licensing or franchising arrangements, having separate trademarks for each licensee or franchisee can help maintain brand consistency while granting exclusive rights within their respective territories.
Defensive Purposes: In some cases, businesses may register additional trademarks defensively to protect their brand against potential infringements or unauthorized use. This strategy involves securing trademarks that are variations or alternatives of the core brand to maintain control and prevent confusion in the market.
Ultimately, the decision to have multiple trademarks depends on your business objectives, market presence, and branding strategy.
Can I transfer my trademark to someone else?
Yes, it is possible to transfer ownership of a trademark to someone else through a process known as trademark assignment. A trademark assignment involves the transfer of all rights, title, and interest in a registered or pending trademark from one party (the assignor) to another party (the assignee). Here are some key points to consider regarding trademark transfers:
Legal Process: To transfer a trademark, a formal agreement called a trademark assignment agreement is typically drafted between the assignor and the assignee. This agreement outlines the terms and conditions of the transfer, including the description of the trademark, the scope of the rights being transferred, and any associated goodwill.
Recording the Transfer: In most jurisdictions, it is important to record the trademark assignment with the relevant trademark office. By doing so, the change in ownership is officially recognized, and the new owner’s rights are protected. Failure to record the assignment may result in difficulties in enforcing the trademark or asserting ownership rights in the future.
Rights and Obligations: Through the assignment, the assignor relinquishes all rights and control over the trademark, while the assignee assumes full ownership and becomes responsible for maintaining and protecting the trademark moving forward. This includes any renewal or maintenance requirements, monitoring for potential infringements, and taking appropriate legal action if necessary.
Considerations for Assignor: If you are the assignor, it is important to ensure that you have the legal right to transfer the trademark and that there are no encumbrances or disputes associated with it. It is advisable to conduct due diligence and seek legal advice to ensure a smooth and valid transfer.
Considerations for Assignee: If you are the assignee, it is crucial to review the trademark’s status, existing licenses or agreements, and any potential conflicts before finalizing the assignment. Conducting a thorough search and consulting with a trademark attorney can help identify any risks or issues associated with the transferred trademark.
It is important to note that the specific requirements and procedures for trademark assignment may vary depending on the jurisdiction in which the trademark is registered. Consulting with a trademark attorney or legal professional experienced in intellectual property matters can provide valuable guidance and ensure compliance with the applicable laws and regulations governing trademark transfers.
Can I license my trademark to someone else?
Yes, it is possible to license your trademark to others through a trademark licensing agreement. Licensing your trademark allows you to grant permission to another party (the licensee) to use your trademark in connection with specific goods or services, while still retaining ownership of the trademark. Here are some key points to consider regarding trademark licensing:
Licensing Agreement: A trademark licensing agreement is a legal contract that outlines the terms and conditions of the licensing arrangement between the trademark owner (licensor) and the party seeking to use the trademark (licensee). This agreement specifies the scope of the license, including the duration, territory, and permitted use of the trademark.
Quality Control: As the trademark owner, it is important to maintain quality control over the goods or services associated with your trademark. The licensing agreement should include provisions that allow you to monitor and enforce quality standards to ensure that the reputation and distinctiveness of your trademark are preserved.
Royalties or Fees: In most cases, trademark licensing involves the payment of royalties or licensing fees by the licensee to the licensor. The agreement should clearly specify the payment terms, including the amount, frequency, and method of payment.
Territorial Restrictions: Trademark licensing agreements may include territorial restrictions, limiting the use of the trademark to specific geographic regions or countries. This allows the licensor to control the expansion and distribution of products or services under the licensed trademark.
Duration and Termination: The licensing agreement should specify the duration of the license, including any renewal options. It should also outline the circumstances under which either party can terminate the agreement, such as breaches of the agreement terms or failure to meet quality standards.
Trademark Ownership: It is important to clarify in the licensing agreement that the trademark ownership remains with the licensor and that the licensee does not acquire any ownership rights in the trademark as a result of the licensing arrangement.
Legal Considerations: Licensing a trademark involves complex legal issues. It is advisable to consult with a trademark attorney experienced in intellectual property matters to ensure that the licensing agreement is properly drafted, compliant with applicable laws, and protects your rights as the trademark owner.
By licensing your trademark, you can generate additional revenue streams, expand your brand’s reach, and establish mutually beneficial partnerships with other businesses. A well-drafted licensing agreement provides clarity, protects your trademark, and helps maintain the value and integrity of your brand.
What are International Classes?
The USPTO classifies 47 groups of goods and services as “International Classes.” Depending on the goods or services your business offers, you may register in one class or several classes. An experienced trademark attorney can help you draft your list of goods and services to ensure you are filing in the right classes.
What is a Trademark Office Action?
If your trademark application is rejected, you’ll receive an Office Action from the USPTO listing the reasons that your trademark application was rejected. The reasons for rejection can be simple or complex. If you receive an Office Action, then contact a trademark attorney right away to advise you on the next steps and help draft an appropriate response to the USPTO.
What Does the Trademark Trial and Appeal Board do?
The Trademark Trial and Appeal Board (TTAB) is an administrative body within the United States Patent and Trademark Office (USPTO) that handles various proceedings related to trademark disputes and appeals. The primary functions of the TTAB include:
Trademark Oppositions: The TTAB hears and decides trademark opposition proceedings. When someone believes that a trademark application published for opposition may harm their existing rights, they can file an opposition with the TTAB. The TTAB reviews the arguments and evidence presented by both parties and makes a determination on whether the registration should be refused based on the opposition.
Trademark Cancellations: The TTAB also handles trademark cancellation proceedings. These proceedings occur when a party seeks to cancel an existing trademark registration. The TTAB reviews the grounds for cancellation, such as abandonment, non-use, or fraud, and renders a decision on whether the registration should be canceled.
Appeals: The TTAB serves as the appellate body for trademark application refusals. If an applicant’s trademark application is refused by an examining attorney at the USPTO, they have the option to appeal the decision to the TTAB. The TTAB reviews the appeal and makes a determination on whether the refusal was justified or if the mark should be allowed for registration.
Generic Trademark Refusals: In cases where a trademark application is refused on the grounds of being generic or merely descriptive, the TTAB may be involved in deciding the issue. The TTAB examines the evidence and arguments presented by the applicant and the USPTO’s examining attorney to determine if the refusal should be upheld or if the mark can be registered.
Trademark Trial Proceedings: The TTAB conducts trial proceedings for various trademark-related matters, including concurrent use proceedings, interference proceedings, and concurrent use registration proceedings. These proceedings involve resolving disputes over the use and registration of trademarks.
The decisions rendered by the TTAB can have a significant impact on the rights and registration of trademarks. Parties involved in proceedings before the TTAB have the opportunity to present their arguments, evidence, and legal positions, and the TTAB makes determinations based on the merits of the case and applicable trademark laws.
Will the USPTO let me know if a third party is infringing on my registered trademark?
The United States Patent and Trademark Office (USPTO) is primarily responsible for reviewing and approving trademark applications. While they do not actively monitor or enforce trademark rights, they provide a platform where you can register your trademark and establish your rights. It is your responsibility as the trademark owner to monitor and enforce your rights against potential infringement.
The USPTO does not proactively inform trademark owners about potential infringements by third parties. It is up to you, as the trademark owner, to be vigilant in monitoring the marketplace for any unauthorized use or potential infringement of your registered trademark.
To protect your trademark rights, it is recommended that you actively monitor the marketplace for any unauthorized use of your trademark. This can involve conducting regular searches, monitoring online platforms, and keeping an eye on your industry for any potential infringement. If you come across any unauthorized use or believe that your trademark is being infringed upon, it is advisable to consult with a trademark attorney who can guide you on the appropriate course of action.
Taking prompt action against infringement is crucial to protecting your trademark rights. This may involve sending cease and desist letters, negotiating settlements, or initiating legal proceedings if necessary. Remember, the USPTO does not actively police or enforce trademark rights, so it is your responsibility to actively monitor and defend your trademark against potential infringements.
Should I hire a Trademark Attorney to help me register my trademark?
Engaging a trademark attorney to assist with the registration of your trademark can provide several benefits and increase the chances of a successful outcome. While it is not a legal requirement to hire a trademark attorney, here are some reasons why it is recommended to consider their expertise:
Expertise and Knowledge: Trademark attorneys specialize in trademark law and possess in-depth knowledge of the registration process. They understand the intricacies of trademark law, rules, and procedures, which can be complex for individuals without legal training. Their expertise allows them to navigate potential challenges, anticipate issues, and provide valuable guidance throughout the process.
Comprehensive Trademark Search: A trademark attorney will conduct a thorough search to assess the availability of your desired mark. They have access to professional databases and resources that enable them to identify potential conflicts with existing trademarks. By conducting a robust search, they can help minimize the risk of infringing on someone else’s rights and save you from potential legal disputes down the line.
Application Preparation and Filing: Trademark attorneys have the necessary skills to prepare and file your trademark application accurately and efficiently. They understand the specific requirements of the trademark office, ensuring that your application is complete, meets all legal standards, and includes the appropriate documentation. This reduces the likelihood of delays, objections, or rejection due to errors or omissions in the application.
Legal Representation and Communication: If any issues or objections arise during the trademark examination process, a trademark attorney can effectively represent your interests and handle communication with the trademark office. They can respond to office actions, address objections, and provide the necessary legal arguments to support the registration of your trademark. Their expertise can increase the likelihood of overcoming objections and reaching a favorable resolution.
Enforcement and Protection: Trademark attorneys can provide ongoing support beyond the registration process. They can assist in monitoring your trademark for potential infringements, take legal action against infringers, and help protect your rights. In case of disputes or infringement, having a trademark attorney by your side can be invaluable in enforcing and defending your trademark rights.
While hiring a trademark attorney involves additional costs, their services can provide long-term benefits by safeguarding your brand, reducing legal risks, and increasing the overall effectiveness of your trademark registration process. It is advisable to consult with a reputable trademark attorney to discuss your specific needs and gain a deeper understanding of how they can support your trademark registration efforts.
What’s the difference between a live trademark and a dead trademark?
The terms “live trademark” and “dead trademark” are used to describe the status of a trademark registration. Here’s the difference between the two:
Live Trademark: A live trademark refers to a trademark registration that is active and in force. It means that the trademark has been approved, registered, and is currently valid for use. A live trademark indicates that the owner has fulfilled all the necessary requirements, such as filing the application, responding to office actions (if any), and maintaining the registration by submitting required documents and fees at specified intervals. A live trademark grants the owner exclusive rights to use the mark in connection with the registered goods or services.
Dead Trademark: A dead trademark, on the other hand, refers to a trademark registration that is no longer active or valid. There are several reasons why a trademark may be considered dead, including abandonment, non-renewal, cancellation, or withdrawal of the application. For example, if the trademark owner fails to maintain the registration by not submitting the required documents or fees within the specified timeframes, the trademark may be deemed dead. A dead trademark no longer holds legal protection, and its rights are no longer enforceable.
It’s important to note that the status of a trademark can change over time. A trademark that is currently dead may have the opportunity to be revived or reinstated under certain circumstances, while a live trademark can become dead if the owner does not fulfill the necessary requirements to maintain its validity.
To verify the status of a trademark, it’s recommended to search the official trademark database or consult with a trademark attorney who can provide accurate and up-to-date information regarding the specific trademark’s status.
Is it ever too late to hire a trademark attorney?
Ideally, you want to hire a trademark attorney as soon as you know that you want to trademark a piece of intellectual property. A trademark attorney can help you do a thorough search of existing marks and submit your application to the USPTO.
However, you can call on a trademark attorney at any part of the application process. For example, a trademark attorney can help if you’ve already submitted an application, but it was rejected. An attorney can help if your mark is already approved but you need someone to monitor the market for infringement. An attorney can be your representative in court if needed. And, a trademark attorney can be contacted for general questions and advice about trademark registration.
Why Trademark Registration Matters for Columbus Businesses
Right now is an ideal time to start a business in Columbus. The people are friendly, the weather is great, and the downtown area is always buzzing with activity. Columbus business owners know that there’s a lot of work that goes into opening a new business, but that hard work can pay off.
Many new business owners are understandably watching their budgets and may be reluctant to pay for a proper trademark search and registration early on in their business venture. Instead, they search the internet to determine if the name of their product or business is truly unique and available to use. To put it simply, that’s a mistake.
Imagine the following: Betsy is a master baker and she’s always dreamed of opening her own bakery in downtown Columbus. After saving her money for a few years, she decides to move forward. She leases a storefront, purchases new equipment, orders signage, and develops marketing materials. Betsy searches for the desired name of her business, House of Cakes, on Google, but finds no matches in Columbus.
What Betsy doesn’t realize is that another bakery in Delaware owns the trademark to the name House of Cakes. One day, the owners of the Delaware location come across Betsy’s website. They tell their trademark attorney that someone in Columbus is infringing on their trademark rights and request that a cease-and-desist letter be sent to Betsy.
If you’re thinking about starting a new business, then don’t rely on quick internet searches to determine if your desired trademark is available. The only way you can truly be sure you are not infringing on someone else’s trademark is to have a trademark attorney conduct a thorough trademark search.
If you have questions about trademark registration, then contact the attorneys at Cohn Legal for a no-cost trademark consultation.
Cohn Legal, PLLC is not located in Columbus and yet it can assist businesses from Ohio in registering a federal trademark because trademarks are governed under federal law.
Trademarks Services for Columbus Businesses
- Trademark Search Services
- Trademark Application Filing
- Trademark Infringement Defense
- Trademark a Name
- Trademark a Phrase
- Trademark Cease and Desist Letters
- Trademark Office Action Response
- Trademark Abandonment